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Well ladies and gentlemen we have come to the end of the program. This has been nothing short of an amazing experience. I am elated that you followed me through the highs and lows of the past 10 months and I hope you were able to take away some invaluable information about the program from my point of view that can help you if you’re interested in transitioning into the field of patent law. My apprehension evident in my initial posts has subsided completely and I am ready to tackle my new position as a technical advisor immediately following graduation.

We have a dinner planned for the day before graduation and our families will be able to not only meet Karen and Cathi, but they will also be able to meet the Professors that have been providing words of wisdom throughout the year. I can’t speak for my classmates but I always told my mom about our Professors so she is definitely ready to put some faces to the stories I’ve been telling her all year. It will be bittersweet to say goodbye to everyone, but it’s nice to know that although we came in as students we will be walking away as colleagues and friends.

I can honestly say that I have built some relationships throughout this program that will last a lifetime. We had a very exciting group of students that are intelligent, hilarious and unfiltered (some more than others). I wish them all nothing but success on their next steps in life.

If you or someone you know is considering transitioning into the world of patent law I strongly suggest looking into this and similar programs because I feel much more prepared to start working than I would have had I not participated in the MSPL program. Although the cost of the program was initially a hard pill to swallow since I’d come from a fully paid doctoral program, it was worth every penny. From the relationships formed, the strength of the curriculum, and the extracurricular opportunities, I wouldn’t change a thing. Don’t be afraid to pivot professionally in a direction that better suits your interests and professional goals. Remain true to yourself and you will not go wrong.

I told you all last semester that I was chosen to be a member of the Business Plan Competition Team from the Office of Technology Transfer. If you’ve been following me you will also know that we have competed in two competitions, The Cardinal Challenge and the New Venture Champion, and lost both competitions, not even making it out of our room. I won’t lie I was mad; I knew how much work we put into developing our business plan, identifying our market strategy and gaining traction for the company.

I will say, compared to other business plan teams in the competitions, we had a rather complex technology and business model that wasn’t always well understood by the judging panel. We couldn’t quite find the balance between explaining the science in enough detail to satisfy the judges with getting to the point of our business operations. Looking through our teams google drive you’d see at least 10 versions of our business plan with countless more PowerPoint presentations indicative of us trying to figure out what the judges wanted.

The last competition we competed in was the McCloskey Business Plan Competition at Notre Dame and we were hoping that home court advantage would come into play. We simplified our pitch deck significantly compared to previous competitions because we only have 5 minutes to wow the judges. In a way I felt like the entire team was going in the competition with mixed emotions; hoping we’d win but at the same time having the outcomes of the previous two competitions in the forefront of our minds.

I felt like we performed well in the initial 5 minute presentation which led us to the finals but we wanted to take home the win so we knew we had to show up and show out so that the judges had no choice but to give us the grand prize. During the final pitch we were on our A game despite some technical difficulties that were out of our control. I was so proud of the team for how we presented, answered questions, and ignored the computer hiccups.

During the awards presentation it felt like EVERY OTHER TEAM was being called except Certus Therapeutics, Inc and my heart was racing. Finally we were called as the winners of the Grand Prize of $25K. All of the LONG HOURS we put in had finally paid off and we were thrilled! If you’ve taken nothing from my blogs over these 10 months it’s don’t count yourself out. It isn’t over until the fat lady sings.

Read about the winning team here: https://research.nd.edu/news/66367-cancer-treatment-system-wins-notre-dames-2016-mccloskey-business-plan-competition/

We are taking a Patent Practitioner course this semester and our discussions have been extremely interesting in regards to difficult client interactions and how case law alters practicing methods. We were presented with a scenario in which we had a deadline for two different clients on the same day. One client has always been helpful, timely and just an overall pleasant person. On the other hand the second client is disrespectful, aggressive and there is a clear difference of personalities. We were asked how would you handle this situation and if we would treat the clients any differently.

Of course my stance was to meet the deadline for both clients despite my personal relationship with either client. I did however go on to say that I would make sure the response for each client puts the claims in condition for allowance. Although I may not personally care for a client as a practitioner it is vital to put those feelings aside and always remain professional. We cannot forget that we depend on clients for billable hours. Our professor did caution against allowing clients to be disrespectful to the point of which one would need to withdraw representation all together.

Having these very honest conversations with seasoned professionals in the field are great ways for newcomers like my MSPL cohort to prepare ourselves for a variety of clients once we start practicing. These conversations in parallel with working with our capstone mentors have provided great practical experience with client counseling that I know I didn’t have previously. I tend to wear my emotions on my face, so I must be mindful of that as I speak with clients. Additionally, I’ve been told that I have an accent, I vehemently disagree with this statement, so that’s something else I need to work on in regards to client counseling. Overall I’m excited to interact with a variety of clients.

It’s weird to think that things are winding down and coming to an end, well almost. Besides the project in my tech elective, everything else seems to be ending already. Having done my final presentation and handing in my final document soon, there’s not much left to do. The next and almost last step is the Markman Hearing. This is a hearing in which a judge examines evidence from all parties on the appropriate meanings of relevant key words used in a patent claim, when patent infringement is alleged by a plaintiff. Once this is done it’s going to be time for finals. It all just seems so sudden, especially this blog. My last one. Writing these blogs has been an awesome experience. I remember in the beginning of the year when I wrote my first one and thinking to myself what am I going to write about for 19 more blogs. Well I did it. Twenty blogs later and here I am writing the last one.

I’ve decided to take a trip down memory lane. Going back to the first week of school, the boot camp days. The patent law boot camp was a great way to introduce everyone to patent law. Although it was only a week long, I felt that I learned so much. We can’t forget about the South Bend Cubs game either! It was great to socialize with everyone outside of a school setting and we’ll never forget how funny it was when Dan and Chris went down onto the field to race on kid hopper balls. Great first impression. Now moving on to our classes. I didn’t realize how much I learned until looking back now. The teachers we had were irreplaceable with such great personalities. From Mike’s crazy patents to Ron’s awesome stories about patent searching competitions in Japan, and we can’t forget about Jerry’s enthusiasm and loud voice and his extremely accurate Arnold Schwarzenegger impression. As for this semester, Keith has taught us so much about patent prosecution. We are now all experts on water slides. Brad’s jokes towards patent law definitely helped keep the class interesting, especially his feelings about PCT applications. Amy’s class is short, only half a semester, but I’m glad she’s the one that’s teaching it. She has a great personality and although it’s a dreaded 8am class, she keeps everyone awake and involved in the discussions.

We all wouldn’t be here if it wasn’t for Karen. I just want to thank her for picking such an awesome staff and creating this program. Also a shout out to Cathi! Who else would I send my blogs to and have coordinate my presentations. Thank you everyone for such a great year.

So I just finished my final presentation for capstone. Phew! What a relief to have that over, nah I’m just kidding, it was actually fine! The presentation this time was more of a meeting so although I had to stand and give a PowerPoint presentation, it was more relaxed than the first one. This time it was my job to provide client counseling. I had to make sure that everything I talked about and wrote for the patent application was clear to my client. I had to teach him all the parts of the application as well as explain why they are written so differently. The best part of my day was the positive feedback at the end of the presentation. Getting positive feedback is a great feeling. Being told I improved from the first presentation was both comforting and exciting. I have to admit I was a lot more relaxed and comfortable this time around and it definitely showed. Some advice though, don’t be nervous. These presentations and any you may have to give at your future job are going to be in front of people you know or just met, but everyone is only human and the fear of public speaking shouldn’t get in the way. Because of the two presentations this year, I know that I have definitely improved on my public speaking and communication skills.

I have to say, another highlight of my presentation was being able to demonstrate the laws and understanding of a non-provisional patent. In the beginning of the year, there were so many things I didn’t know and thought would take me a long time to learn. Looking back now, I’m impressed with all the information I have retained about patent law. It’s exciting to know that I can comfortably talk about the laws and explain them to other people. A skill I didn’t think I would have quite yet, and using that skill with my client was the icing on the cake. Working with a live client throughout this whole year was the best part of the program. Overall this was a great experience and as much as I hated presentations, I have to admit I’m glad we had to do them for this program. It is a skill you want to keep with you no matter where life takes you.

These last few weeks I’ve been in a haze of stress with the semester wrapping up, preparing for my last two business plan competitions and the bane of my existence aka the job search.

I am happy to report back to you all that I successfully completed my final capstone presentation yesterday morning. Although I was dead tired due to my presentation being at 8:30am and not getting much sleep, I got great feedback about my client counseling skills and my understanding of patent law. It was a great feeling to know that I could convey my knowledge of patent law in a manner that was beneficial to my client while responding quickly to questions from the MSPL program director and the Office of Technology Transfer. After working on my PhD for 5 years, it is pretty crazy to think about the amount of information I’ve been able to retain about a completely new field in less than a year.

One another note, I HAVE A JOB!!!!! I officially accepted an offer from an amazing firm in Downtown Chicago as a technical advisor and I can’t wait to start. Receiving the offer was pretty much the highlight of my year. I’d begun to accept the possibility of not have a job following graduation and having to hustle and bustle during the summer to find a position. I cried like a baby when I got the offer and shared the news with my mother who then shared with the entire world (I guess you can say she was proud of me). It’s such a relief to no longer have that on my plate.

Winning my last two business plan competitions and passing the patent bar are the two things can make these last months at Notre Dame any better. This year has been a roller coaster ride but it hasn’t quite come to a complete stop just yet.

Want the exclusive trademark rights to “March Madness”? So does the group that created it.

Notre Dame may have fallen from the tournament this past Easter Sunday, leaving Domers with no vested interest in March Madness whatsoever, but the history and value of the NCAA “March Madness” trademark is unaffected by our departure from the competition. Since we’ve been learning about trademarks in ethics class, I figured it would be appropriate to write a little bit about the checkered history of this particular mark.

So where did the idea for this iconic trademark actually originate? While one could suspect that the NCAA has always used this name for their tournament, in reality the term was coined as the title of a 1939 essay for the Illinois Scholastic, describing the Illinois High School Association’s (IHSA) high school basketball tournament. However, the IHSA had not gone through the process of registering their trademark until 1990. Unfortunately for the IHSA, Intersport had registered “March Madness” as a trademark in 1989, but this was resolved when the two parties came to an agreement wherein they would combine their ownership and trademark rights.

In 1995, Intersport signed over its rights to the trademark fully to the IHSA; however the NCAA had been using the term since 1982 to describe its tournament, and had sold a license of use of “March Madness” to GTE Vantage. In the ensuing case Illinois High School Association v. GTE Vantage Inc., it was found that both the NCAA and the IHSA had rights to the mark, as it the mark was deemed to have multiple uses (reference to the NCAA tournament or the IHSA tournament). The IHSA and NCAA have since formed the March Madness Athletic Association, dedicated to suing infringers of the mark. The IHSA is not able to collect royalty payments on the use of “March Madness” by the NCAA, which would certainly have been an enormous payday.

How enormous of a payday? I’m unsure. Truthfully, valuing a trademark is a complex process in which I have no experience. However, it’s not going to be an insignificant amount, just looking at the figures associated with the tournament itself. Houston, the host of the fabled “Final Four” is expecting numbers upwards of $300 million of economic impact from the tournament, and the city of Dayton (host of the “First Four”) has seen a $66 million impact since 2001 when it began hosting. In an even more spectacular display of financial figures which should be given in scientific notation, the NCAA and a combination of CBS and Turner entered into a 1.08 x 10^9 dollar agreement to broadcast the tournament from 2006 to 2020. None of the above figures include the equally stunning numbers from brackets and betting. Las Vegas sources estimate that while $9 billion was wagered legally on the NCAA tournament last year, another $7 billion was illegally gambled.

Bottom line, I’m sure that the IHSA would love to be able to collect royalty payments from the NCAA. The takeaway is simple; register your trademarks, or you just might have to share or forfeit them.

It’s weird to think that our full patent application is almost due. Thinking back to the beginning of the semester, all the due dates seemed so far away and now that everything’s been corrected, it’s time to put it all together. I’ve come to the realization that there were a lot of things I left out or didn’t think to add to the application. Wording is important in a patent application. After having my detailed description reviewed by my outside mentor, he pointed out certain words that shouldn’t be used because they might be held against you. Looking back on them now I understand why. I have to be more careful when I start writing my own applications. There were also situations where I didn’t explain something broad enough or I wasn’t consistent with the language I was using, for example, calling it a device in my claims and then renaming it in my detailed description. Patents are all about consistency. This used to worry me and make me think that when I’m working for a company, I might leave things out on accident. But then I think about it again and realize I won’t be alone. There will be people in my company that will check my work, especially in the beginning when I’m new.

I also have a great deal of comfort from this program. It has helped me learn and make mistakes now, rather than at my future company. I think of this program as a trial run that provided real life examples of what it will be like to work in the real world as a patent agent. Many of the homework assignments such as the office actions or situations we’ve talked about will definitely be utilized while I’m working. I won’t hesitate to look back on all the assignments to help me with whatever situation I’m in at my job. The best part about the homework assignments is the feedback I receive from my teachers. Although it’s disappointing to submit something you thought was really good but the grade was lower than you expected, it’s what helps you learn the most. I really value the feedback I receive. It only helps me become more prepared for when I become a patent agent.

I knew nothing about patent law at the beginning of the MSPL program, however, now I have a sense of confidence when speaking about patent law to not only my classmates but my peers outside of patent law. I look at my writings from last semester for various classes and my capstone project wondering what the heck was I thinking when I wrote those things.

Last semester I struggled with determining novelty and non-obviousness not to mention drafting of the claimset when it came to the complex technologies assigned to me. As I apply my knowledge of patent law and prosecution that I’ve gained from the amazing professors in the program and the IP Clinic, I am truly looking at my capstone project with fresh eyes.

Karen told us that as we neared the end of the program we would have learned so much more about being a patent practitioner that we would look at our initial drafts during the first semester with almost a sense of disgust and boy was she right. I have completely revamped my claimset and actually have an entirely new outlook on the technology as a whole which is a great thing in my book. Having a mentoring attorney that has been in the biotech work for years has tremendously helped me understand that what may be appropriate for mechanical technologies may not be applicable to biologics and biotech related technologies.

While I’m thrilled that I’ve come such a long way, the reality is that when I’m no longer in the program and a disclosure comes across my desk I won’t have the luxury of 8 months to draft a complete application. Some professors in the program have shared occasions when they’ve had less than a day to draft and file an application and as of now that seems not only terrifying but it also sounds a lot like my last day of work (no lol). In all honesty, I welcome the challenges that I know will come when I FINALLY start at a firm.

So I stumbled across the “X-Patents” not too long ago. They sound so secretive and mysterious when you don’t know what they actually are. You can take a wild guess as to what they might be. I’ll give you a hint: patents. So what are they really? Well they’re actually the patents issued from 1790 to 1836. The reason behind the unique name is because they burned in a fire leaving only inventors’ copies to reconstruct the collection. Only 2,600 copies of the patents out of 10,000 have been recovered to date. I’ve decided to list out some of them just to give a general idea of what was first being patented.

PATENT X1The first patent ever granted by the U.S. was by Samuel Hopkins of Pittsford, Vermont, July 31, 1790. His invention improved “the making of Pot ash and Pearl ash by a new apparatus and Process.”

PATENT X72The Cotton Gin was invented by Eli Whitney in 1794. It separated cotton fibers from the plant’s seeds. The Cotton Gin played an enormous role in the industrial revolution.

PATENT X4378Granted to Samual Morey, this patent contains one of the first descriptions of what would become known as an internal combustion engine. This patent wasn’t discovered until 2004 when it was found along with 13 other X-patents in the Dartmouth College archives.

PATENT X9430Samuel Colt patented the revolving gun in 1836.

PATENT X9893The first lock was patented in 1836 by Almon Roff.

From the first ever patent signed by President George Washington, to the eight million U.S. patents and counting, the world will continue to invent amazing things.